Just Wanna Trademark for Makers: A Creative's Legal Guide to Getting & Using Your Trademark

By Elizabeth Townsend Gard and Sidne K. Gard

Securing a trademark can be complicated, time-consuming, costly, and all too often unsuccessful. The resources currently on the market are not aimed at creative professionals, leaving them guessing at critical information or wrangling with examples without relatable context. Just Wanna Trademark for Makers offers easy-to-understand legal information created specifically for creative entrepreneurs and professionals. Going beyond the quilt-focused first edition, this newly revised book has updated information, new examples, and cases that show all creative entrepreneurs how to navigate the process of securing a trademark.

• Language: English
• Publisher: C&T Publishing, Inc.
• Release date: Sep 25, 2023
• ISBN: 9781644034316

Elizabeth Townsend Gard

Elizabeth Townsend Gard is the John E. Koener Endowed Professor of Law at Tulane University Law School and an avid quilter since childhood. She lives in New Orleans, LA. Together, Elizabeth and Sidne started Just Wanna Quilt, which has expanded to crafts and art as well. Listen to the podcast and learn more at justwannaquilt.com.

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Introduction

Just Wanna Trademark for Makers is a legal resource for the busy, creative entrepreneur. Registering a trademark is one of the key anchors of a business venture, just like opening a bank account. It protects the naming of the business, services, or goods that a business sells. The questions are (1) can that trademark be legally protected, and (2) have you infringed on someone’s brand by choosing that trademark?

This book advocates for you to apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO). For a long time, for many small entrepreneurs or start-ups, trying to register your trademark seemed like an impossible task: expensive and intimidating, something to put off for another time. The Internet has made the trademark application process more accessible, but in doing so, also a bit confusing. For the busy entrepreneur, how do you know what you need to do, and how do you do it cost-effectively?

Crafters are a DIY-kind of community. So, why not get real and teach you how trademark really works and help you understand the application process like a pro? That way, you can make informed decisions about your branding and business. You can hire an attorney, use available trademark legal services, or do it yourself. But you will understand the language, the physics of trademark.

We are a team: a law professor and an artist/crafter/writer. Together, we tackle the questions surrounding entrepreneurship for start-ups and businesses. Elizabeth Townsend Gard (she/her) is a law professor at Tulane University Law School, where she specializes in copyrights, trademarks, and entrepreneurship (and she loves to quilt). She is also the host of the Just Wanna Quilt podcast, which explores the culture and legal side of the quilting and craft industry. Sidne K. Gard (they/them) is an artist, writer, and crafter. Currently, they are an undergraduate Distinguished Scholar at the School of the Art Institute of Chicago. They are also a managing editor and the entertainment editor for F Newsmagazine.

Elizabeth and Sidne at a photoshoot for Quiltfolk magazine in the first year of the project • Photo by Melanie Zacek for Quiltfolk © 2018

Together, we set out on a journey to understand and communicate the key legal elements of businesses to creatives who are also entrepreneurs. Just Wanna Trademark for Makers is the result of that work. We explain and translate key terms for you and walk you through the process.

Over the last five years, Elizabeth has interviewed more than 500 people about their relationship to sewing, crafts, and intellectual property for the podcast Just Wanna Quilt. Industry leaders, regular quilters, celebrities, lawyers, law professors, and many entrepreneurs have come to talk to her about their experiences. This project began as an exploration of the business of quilting, but it quickly expanded to the craft and art industries and those who love to make. Some were entrepreneurs. Others were hobbyists. And as we learned from them, we saw that their questions and experiences were the same, whether they were knitters selling on Etsy or someone starting a tech company. That’s how this book series, Just Wanna for Makers, began.

The Just Wanna Quilt podcast launched on February 5, 2018, and it focuses on the intersection of quilting and crafts and the law. People tell their stories and then, in the last fifteen minutes of each episode, discuss any intellectual property issues they have faced in making their art.

One of the key areas that people often need information about is trademark law. Trademarks are the core identity of any business. But for many, hiring a trademark attorney seems out of reach. We are meeting you where you are, hoping to provide a resource that will let you take control of the choices in your business development.

Along the way, on our Just Wanna journey, we have met a lot of people who were looking for information about applying for a trademark, and we have met wonderful entrepreneurs fulfilling their dreams. We’ve watched their businesses grow, and we are happy to play a small part in their trademark journey.

Sara Trail started the Social Justice Sewing Academy, which has grown into a movement of expression and craft.

One such entrepreneur is Sara Trail, who created the Social Justice Sewing Academy (SJSA) in 2017 with the idea that access to textile art could be an agent of social change. Sara’s non-profit brings youth workshops into schools, prisons, and community centers, where young artists can express their experiences in cloth. Their work has been shown in museums across the country. Now, they have a number of projects, including The Remembrance Project, honoring victims of violence; the Memorial Quilt Project, to celebrate lives lost; and co-authored a book, Stitching Stolen Lives: The Social Justice Sewing Academy Remembrance Project, C&T Publishing. Early in our project, we also tutored Sara and SJSA in the basics of trademark so that they could file a federal trademark application with the USPTO to protect the name and brand that they were building. Elizabeth still remembers walking through the application one night on the phone. And so, the idea of this book was born.

Another group is the Quilted Twins, twin sisters, Rachel Woodard and Becky Tillman Petersen, who have a tendency to jump in big to whatever they do. Becky lives in Poland, and we still can’t figure out how she makes so many quilts, most of which she donates as part of her endless charity work. Rachel owns a quilt shop in Florida, with a large online presence. They have applied for and received three trademarks, one for printed sewing and quilting patterns, another for fabrics for textile use, and a third for a retail store featuring fabrics and quilting products, all under the Quilted Twins brand.

The Quilted Twins span the Atlantic Ocean. With a business that is part quilt patterns and part quilt shop, these two are unstoppable.

These are just two of the many stories and people we have come to know. We look forward to hearing about your journey, and we hope you find this book helpful.

Teddie Bernard is a comic artist who is on this trademark journey with us. Teddie’s comic Bad Parable tells the story of a set of anthropomorphic characters confronting the difficulties of the times we live in. He has graciously agreed to have his characters go on this Just Wanna Trademark for Makers journey with us. We have a feeling that what Teddie and his band of characters think about the process may reflect your own thoughts, and so we welcome them to the narrative To see more of Bad Parable and Teddie’s other comics, go to teddiebernard.net.

How to Use This Book

This book is designed to help you apply for a trademark and then maintain and use it. We take you through learning about trademarks, getting ready to file a trademark application, and responding to common issues that might arise with your trademark application.

We suggest you jump in and work through this book section by section:

PART I: WHAT IS YOUR MARK? explains what makes a strong trademark and how to think about what you might want to apply to register. From learning about the various types of marks to troubleshooting potential issues, you’ll work through all the steps to finalize your desired mark. You will also learn about the International Classification system, which tells the world just exactly what your trademark applies to.

PART II: CAN YOU USE THIS MARK? takes you through searches and checks to be sure that your mark is viable and available. In the process, you’ll learn how to search the USPTO trademark records to find out whether there are any conflicts with your idea for a mark.

PART III: THE APPLICATION takes you through the application process, step by step.

PART IV: YOUR TRADEMARK looks at what happens once you have your trademark certificate, including how to maintain your trademark; what happens if someone infringes on your trademark; and what others can legally do with your trademark, even without your permission.

Icons Used in This Book

A couple helpful icons are designed to make it easier for you to use this book. When you see these symbols, you’ll know what to do.

Lawyer time icon alerts you that the question or issue at hand may be more complicated than a DIY solution. You are not required to hire an attorney when you encounter something sticky, but we tell you when it may be a wise decision.

Online resources icon provides additional resources on the Web may be helpful in understanding a particular topic.

The Big Trademark Application List and Weblinks Document

Finally, we want to introduce you to the Big Trademark Application List and the weblinks document. We have compiled the many steps you will follow into a form that you can fill out as you work through this book so you will be ready when it is time to apply for your trademark. We want you to copy, download, and use this list. Don’t let the size of the Big List be intimidating. You will learn along the way that many items will not not apply to your particular situation, and you’ll get to skip them! The Big List also allows you to double-check that you are prepared, whether filling out the application or chatting with an attorney.

Weblinks are sometimes long and difficult to type accurately. To make it easier for you to quickly find the page you need we’ve provided a list of links found in Just Wanna Trademark for Makers.

To access the document through the tiny url, type the web address provided into your browser window. To access the document through the QR code, open the camera app on your phone, aim the camera at the QR code, and click the link that pops up on the screen.

tinyurl.com/11564-documents-download

Before you begin working your way through the book, open up this document and keep it handy on your computer. When you find a webpage that you want to visit, scroll down and find the corresponding chapter title. Under each chapter title, you’ll find a listing of the direct weblinks for each site discussed in the book. Simply click on the link and avoid lots of extra typing.

Web addresses can also change from time to time. We will update the web addresses in this document when notified of a change to any website addresses found in Just Wanna Trademark for Makers.

Ready? Let’s Dive In!

We are going to take you step-by-step in understanding trademark and preparing the materials for your application. Get a snack. Grab some coffee. And let’s do this!

PART I

What Is Your Mark?

The task is to get your trademark application successfully through the United States Patent and Trademark Office (USPTO) process, from submitting the application, to the review process, and finally, accepted as a federally-registered trademark. Our goal is to get you up to speed on how trademark works—the physics of the system—so that you can be in the mindset of the trademark examiner, the person at the USPTO who will be reviewing your application. To do this, we begin with some basic trademark concepts and vocabulary.

Part I starts with an overview of the types of trademarks and covers some questions people usually have before they dive in. Then, before we do anything else, we walk you through the steps in deciding the type of mark you want to register.

1Learn about trademarks. Learn some basic terms and concepts of trademark so you understand the legal language surrounding trademark and how trademark fits within the larger field of intellectual property.

2Choose a mark. Find out about words, designs, smells, sounds, symbols, motions, color-only marks, phrases, and domain names to determine which is best for your good/services.

3Evaluate the strength of the mark. Identify the type of mark (inherently distinctive or merely descriptive) and make sure that it is not generic.

4Check statutory exceptions. Confirm that no weird statutory limitations might muck up your application.

5Choose the category and International Class. Lastly, select the right category and International Class (sometimes referred to as class) for your mark.

That’s the first part! Let’s get started.

STEP 1

Trademark Basics

This book is a step-by-step guide through each part of the USPTO trademark application process, as well as from thinking of a trademark for a product, business, or service to expanding the trademark for your products and services and protecting that registered trademark. Think of us as friends (and not your lawyers) helping you along the way.

Obtaining a federal trademark registration is not terribly hard—there are just some steps to get through. You can do it. You can understand it. But we’ll also help you identify when it might be a good idea to hire a lawyer because it is a bit more complicated. If you believe that your mark is complicated or you have a large investment at stake, don’t hesitate to hire a trademark attorney. And if you have first read this book, you can have more sophisticated conversations with your attorney and be better able to explain what you want because you will understand the ecosystem, the language, and the process. It might even lower your attorney’s fees because they won’t have to take so much time explaining things to you!

Obtaining a federal trademark registration is not terribly hard—there are just some steps to get through. You can do it.

This book may seem big and intimidating, but we’ll guide you along the way. Sometimes, though, something specific will come up that doesn’t apply to your mark, such as using a flag in your logo. We’ve included all kinds of situations that might occur, with signposts that tell you when you can skip a part. That’s why the book is so big! So, don’t be intimidated by its length.

You’ll likely need a couple of evenings to read through this book, learn about trademarks, and then start to apply the lessons to your own situation. We’ll help you along the way. And then, you might need a little bit of time, maybe an hour or so, to fill out the application. And then, you’ll wait for the USPTO’s response, which often takes months, but it is worth it. So, let’s learn more about exactly what a federal trademark is and why (or whether) you should apply for one.

What Is a Trademark?

We all see trademarks every day—the Nike swoosh, the McDonald’s arches, the Starbucks mermaid, and many more. Large and small companies alike protect their brands, in part by registering their trademarks with the USPTO. Trademarks have become part of our everyday world: They help us recognize and differentiate between the goods and services of companies. Trademarks can become an asset for your business.

When trademark specialists refer to the mark itself, they use all caps: JUST WANNA QUILT, MCDONALD’S, BEYOND BOURBON STREET, or JUKI. These are all trademarks, and we know that we are referring to the mark because it is capitalized. We follow this standard for the remainder of the book.

Do Your Trademark Homework

You have a band. You have an Etsy shop. You are writing a comic. You have a non-profit focused on supporting cosplay. You are growing your food truck business. You want to start a quilting and sewing business. No matter what type of business venture you are starting, a trademark protects your brand. You obtain it for specific purposes: to use for education and entertainment, to make rope, or to provide computer repair services, for example. Can you identify what each of the following marks might be for?

You are spending a lot of time building your business. What if all of that effort in making your brand strong goes away? Someone else could register the name before you, or maybe someone else is already using it. By doing your trademark homework now, you can be confident in knowing you are building your business without worry.

Businesses that have registered trademarks for their goods or services with the USPTO

Or, maybe you’ve been around a long time and just haven’t gotten around to applying for a federal trademark. We see many companies that have not registered for federal trademark protection, but applying for a trademark is trending, mostly because of the pressure of the Internet. Amazon requires some vendors to have registered trademarks to sell on their platform, and many social media platforms also require proof of a registered trademark if you complain about someone fraudulently using your logo or other elements of your brand (see Infringing Use). Lastly, you cannot use the registered symbol (®) unless you have registered your mark with the USPTO. You can use the trademark (™) or service mark (℠) symbols without a registered mark, but they don’t carry any legal weight (see Using the Registered Symbol).

Common Questions

1. Doesn’t it cost too much to apply for a trademark with the USPTO? The government fee for the trademark application starts at $250.

2. Doesn’t the application take a long time to complete? Nope! We suggest that you read this book, follow the instructions to prepare your application, and then file. None of those actions should take you long at all. You may have to respond to some questions from the USPTO in a couple of months. You can also hire an attorney if that makes you feel more comfortable.

3. Do I really need a trademark certificate from the USPTO? Well, do you have a website identity that is important to you? Have you invested in people knowing about your products, services, or business? Would you care if a competitor started to use your logo, your branding, or your name? In the world of the Internet, securing a federal trademark has become a key business element, whether you are a non-profit, a start-up, an Etsy shop, or an established business. We see well-established brands that are now being required to register their mark for the first time and sometimes finding out that they actually cannot because someone else already has.

If you are feeling hesitant, it’s okay. We’ve worked with a lot of creative entrepreneurs over the years, and we get it.

The law stuff can seem intimidating, impossible, or like something to put off until another day, but the information is actually empowering. It isn’t scary or impossible to understand, and it’s something to face sooner rather than later.

Our philosophy is simple: Register your trademark ASAP, whether you are preparing to start to use your mark or have been using it for quite a while. As you are creating the name of your product, service, or business, think about trademarks and then register yours as soon as you can.

Which Trademark Is Best?

This book walks you through applying for a federal trademark, but you have other choices, including common law, state trademarks, and trademarks filed outside the United States.

The concept of marking your goods with something that distinguishes them from someone else’s has been around for a long time, even as far back as the Roman Empire.

Édouard Manet, A Bar at the Folies-Bergère (1882)

The Bass label pictured in the Manet painting is said to be the first registered trademark in the United Kingdom, and so important to the brand that the company renamed itself Bass Trademark No. 1.

The modern trademark system grew from the early days of industrialization, when goods started to move on railroad systems across the